How patents work

An introduction for law students

1
 Learning goals
The learning goals of this lecture are to understand:

the different types of intellectual property rights available

the role of the patent system
what can (and cannot) be patented
what rights a patent confers
who is entitled to apply for and obtain a patent
what must be disclosed in a patent application
whether trade secrets can be an alternative to patents
where a patent application can be filed
what a patent application looks like
who the key people are in the patent application procedure
what the patent application procedure entails
what can happen after a patent has been granted
how infringement of a patent is determined
what defences are available
how patents can be used as commercial tools

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 What are intellectual property rights?
There are different types of intellectual property rights:

Patents

Trade marks

Copyright

Designs (registered and unregistered)

Trade secrets

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 Some IP found in a mobile phone
Trade marks:
Made by "Nokia"
Product "N95"
Software "Symbian", "Java"

Patents:
Data-processing methods Nokia

Semiconductor circuits
Chemical compounds Trade secrets:
?

Copyrights: Designs (some of them registered):

Software code Form of overall phone enclosure
Instruction manual Arrangement of buttons in this oval shape
Ringtone Three-dimensional wave form of buttons

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 What is the role of the patent system?
Encourage technological innovation

Promote competition and investment

Encourage dissemination of information

Promote technology transfer

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 What can be patented?
Under the European Patent Convention (EPC), patents are granted for:

any inventions in all fields of technology (Article 52(1) EPC)

provided that they are:

new (defined in Article 54 EPC)
involve an inventive step (defined in Article 56 EPC) and
susceptible of industrial application (defined in Article 57 EPC)

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 What is a "new" invention?
New at the date of filing the patent application

New if it does not form part of the "state of the art"

(Article 54(1) EPC)

"State of the art" means everything made available to the public

before the filing date of the European patent application
(Article 54(2) EPC)

There must have been no public disclosure of an invention

before the filing date of the patent application

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 So keep it confidential!
Under the EPC, the first to file a patent application will be entitled
to the patent

Disclosure:
before filing will invalidate the patent application the invention
will have been anticipated
means not only in writing but in any way at all
can be anywhere in the world "absolute novelty"

Keep it confidential if necessary by using a non-disclosure agreement

(NDA)

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 What cannot be patented? (1)
The following are not considered to be inventions for the purposes
of granting European patents:

Discoveries, scientific theories and mathematical methods

(Article 52(2)(a) EPC)

Aesthetic creations (Article 52(2)(b) EPC)

Schemes, rules and methods for performing mental acts,

playing games or doing business, and programs for computers
(Article 52(2)(c) EPC)

Presentations of information (Article 52(2)(d) EPC)

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 What cannot be patented? (2)
A patent claim directed solely to an item listed in Article 52(2) EPC
will not be considered an invention and therefore will not be
patentable, but

This applies only if the patent claim relates to that subject-matter

or activities "as such" (Article 52(3) EPC)

A patent claim that includes a mix of both patentable, technical,

and excluded, non-technical, subject-matter can be regarded as an
invention and may be patented after all

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 Optional

Programs for computers

Program for a computer "as such" is excluded from patentability
(Article 52(2)(c) EPC), but

Not excluded from patentability if, when running on a computer,

it causes a further "technical effect" going beyond the "normal"
physical interaction between the program (software) and the
computer (hardware)

Programs for computers are therefore not automatically excluded

from patentability

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 What cannot be patented? (3)
Inventions whose commercial exploitation would be contrary to
"ordre public" or morality (Article 53(a) EPC)

Plant or animal varieties or essentially biological processes

for the production of plants or animals (Article 53(b) EPC)

Methods for treatment of the human or animal body by surgery or

therapy and diagnostic methods practised on the human or animal
body (Article 53(c) and Article 54(4)-(5) EPC)

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 What rights does a patent confer?
Right to prevent third parties from commercially exploiting an invention
without authorisation

Not a right to use instead a patent protects an invention by giving the

owner of the patent the right to stop anyone from making or using the
invention without their consent

Rights conferred by a European patent are the same as the rights would
be if conferred by a national patent in each contracting state
in respect of which it is granted (Article 64 EPC)

Right to assign or transfer ownership of a patent and to conclude

licensing contracts (Articles 71-73 EPC)

Maximum term of patent protection is 20 years (Article 63 EPC)

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 Who is entitled to apply for and obtain a patent? (1)
Application may be filed by any natural or legal person,
or any body equivalent to a legal person (Article 58 EPC)

Application may also be filed by joint applicants

(Article 59 EPC)

Application must designate the inventor

(Article 81 EPC)

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 Who is entitled to apply for and obtain a patent? (2)
Right to a European patent belongs to the inventor or successor
in title (Article 60(1) EPC)

If the inventor is an employee, the right to a European patent is

determined in accordance with the law of the EPC contracting state
in which the employee is mainly employed (Article 60(1) EPC)

Invention relevant to the employees normal field of employment will

generally be owned by their employer

Employee may receive additional financial reward depending

on the law of the EPC contracting state concerned

Inventor will always have the right to be mentioned as such before

the EPO (Article 62 EPC)

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 What must be disclosed in a patent application?
A detailed description of at least one way of carrying out the invention
must be given

The information disclosed must be sufficiently clear to a person

"skilled in the art" (Article 83 EPC) this is called "sufficiency"

The information disclosed is published in the patent document

so that everyone can benefit from it

The disclosure of the invention in exchange for patent protection

is also known as the "patent bargain"

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 Can trade secrets be an alternative to patents?
If the invention is a process (e.g. a process of manufacturing)
"trade secrets" may be a viable alternative

But trade secrets can leak out and, if they do, there is no protection

Once the invention has been disclosed, it cannot be patented

In other cases it may be preferable to keep inventing without patenting

simply keeping ahead of competitors by bringing new products onto
the market faster than they do

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 Where can a patent application be filed?
There are different routes to patent protection:

National patent offices

National patent valid only in that country
Non-nationals can apply for a patent
12-month right of "priority" for international applications
European Patent Office (EPO)
A "European patent" is equivalent to national patents in the countries for which it was
granted
the applicant chooses the countries
the cost depends on the number of countries designated
Patent Cooperation Treaty (PCT)
Just one initial application for 141 contracting states
After the international phase, the international application leads to multiple national patent
examination procedures
Costly patenting decisions can be delayed by up to 30-31 months after filing
No international patent, but an international patent application procedure
PCT application can be filed at a national patent office, EPO or WIPO

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 What does a patent application look like?
A European patent application consists of (Article 78(1) EPC):

Request for grant

Description of the invention (Rule 42 EPC) a summary of the prior art,

a disclosure of the invention and what problem it is supposed to solve

Claims (Articles 69, 84 and Rule 43 EPC) determine the extent of

protection conferred by a European patent

Drawings (if any) referred to in the description or the claims

the description and drawings are used to interpret the claims

Abstract (Article 85, Rule 47 EPC) around 150 words that can be used as
a search tool for other patent applications

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 Optional

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 Key people in the patent application procedure
Patent examiner

Applicant

Representative, either:
a professional representative who is on a list maintained
by the EPO (Article 134(1) EPC), or
a legal practitioner entitled to act in patent matters
(Article 134(8) EPC)

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 The European patent granting procedure
Examination on filing and formalities examination

Search report

Publication of application and search report

Substantive examination

Grant of the patent

Validation of the patent

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 What can happen after a European patent
has been granted?
Opposition (Articles 99 - 105 EPC)

Limitation/revocation (Articles 105a - 105c EPC)

Renewal fees (Article 141 EPC)

Invalidity proceedings (under national law)

Infringement proceedings (under national law see Article 64(3) EPC)

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 How is infringement of a patent determined? (1)
Precisely what constitutes "infringement" of a patent may differ in each jurisdiction and will be
determined by the courts with reference to the applicable national law

Typically, courts in European countries have adopted provisions on infringement based on acts
that undermine the right of the patent proprietor to prevent third parties' direct use of the
invention, in particular:
making, offering, putting on the market or using a product which is the subject-matter of the
patent, or importing or stocking the product for these purposes
using a process which is the subject-matter of the patent or, when the third party knows, or
it is obvious in the circumstances, that the use of the process is prohibited without the
consent of the proprietor of the patent, offering the process for use
offering, putting on the market, using, or importing or stocking for these purposes the
product obtained directly by a process which is the subject-matter of the patent

In addition, courts in European countries have adopted definitions of contributory infringement

based acts that undermine the right of the patent proprietor to prevent third parties' indirect
use of the invention, in particular:
supplying or offering to supply a person, other than a party entitled to exploit the patented
invention, with means, relating to an essential element of that invention, for putting it into
effect therein, when the third party knows, or it is obvious in the circumstances, that these
means are suitable and intended for putting that invention into effect

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 How is infringement of a patent determined? (2)
A finding of infringement then depends on whether the features of the alleged
infringing device are covered by the claims of the respective patent

Whether infringement has occurred is to be determined by the courts in each

country where the patent is valid and alleged to have been infringed, with
reference to the applicable national law

However, the EPC Article 69 and the Protocol on Interpretation of Article 69

provides the courts in each country with guidance on the extent of the protection
conferred by a European patent or a European patent application

The extent of protection may go beyond that which is literally covered by the
claims, as interpreted or construed by the court, and may encompass also the
equivalents to the invention covered by the claims

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 Optional

Which jurisdiction will apply in patent litigation?

Under European Union law, the Brussels Regulation provides that
proceedings concerned with registration or validity of patents will occur:

separately in each country in which the patent has been registered

regardless of the place of domicile or nationality of the persons being

sued

Source:
Article 22(4) of Council Regulation (EC) No. 44/2001 of 22 December 2000
on jurisdiction and the recognition and enforcement of judgments in civil and commercial
matters

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 What defences are available?
Defences available when a person is accused of infringement will depend
on the different applicable national laws, but typically:

There is no infringement because the act falls outside the patent claims
There is no infringement because the act is non-infringing, e.g. the rights
conferred by a patent generally do not extend to: (a) acts done privately and
for non-commercial purposes; (b) acts done for experimental purposes relating
to the subject matter of the patented invention
There is no infringement because the patent is invalid, i.e. the alleged infringer
can take legal action to challenge the validity of the patent
There is no infringement because the rights conferred by the patent have expired

Note:
If found invalid, the patent may be cancelled (revoked)
The losing party must usually pay both parties' costs
Out of court settlements including licensing or cross-licensing
may be a viable alternative to patent litigation for both parties

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 Optional

What are unjustified threats?

What constitutes an unjustified threat will depend on the different applicable
national laws, but will typically involve:

a person, whether or not the owner of a patent, who makes unjustified threats
that patent infringement proceedings will be initiated
a person aggrieved by the unjustified threats of patent infringement
proceedings then claiming damages against the person making the threats

However, typically under the applicable national law, a person is not considered
to have threatened another person with patent infringement proceedings merely by:

providing factual information about the patent

making enquiries of the other person for the sole purpose of discovering
whether, or by whom, the patent has been infringed
making an assertion about the existence of the patent for the purpose of any
enquiries so made

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 Optional

What remedies are available?

Remedies available will depend on the different applicable national laws,
but typically include:

Interim or preliminary injunctions

Final or permanent injunctions

Disposal outside channels of commerce

Damages

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 How can patents be used as commercial tools?
Commercialisation and exploitation

Blocking patents

Licensing or cross-licensing

Online databases:
Often free to use and valuable commercial tools
Why not go online and try a search?

www.espacenet.com

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 Summing up this lecture
This lecture introduced you to the different types of intellectual property
rights available and provided some more detailed knowledge of patents
in particular

However, the aim of the lecture was not to make you an expert
in intellectual property law

Instead, the lecture was intended as an introductory overview

to provide a basic level of understanding and raise awareness

So anyone considering filing a patent application or concerned that they

might be infringing a patent, or who is the owner of a patent concerned
that their patent might be being infringed, should seek professional
advice from a qualified patent attorney or a legal practitioner entitled to
act in patent matters

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